Articles

The basic legal framework governing comparative advertisement has been laid down by the Monopolies and Restrictive Trade Practices Act, 1984 and the Trade Marks Act, 1999. This article aims at analyzing the concept of comparative advertisement vis-à-vis trademark infringement.
The Trademark Act, 1999 adequately addresses the issue of trademark infringement in the garb of comparative advertisement, thereby permitting comparative advertising by means of using another's trademark. The trademark law, while catering for usage of another's trademark in advertisement, draws a line to the extent of such permitted usage. The advertiser doing so cannot disparage the goods or services of another. Any such act disparaging the goods or services of another shall not only be an act constituting infringement of trademark, but also shall constitute product disparagement which falls within the ambit of unfair trade practices. It is pertinent to note that the protection provided in the Trademarks Act, 1999, is for a registered trademark. The Trademarks Act also stretches enough to protect well known unregistered marks. This gives the proprietor a statutory alternative to the common law action of passing off.

There is no statutory definition available for the term "Comparative Advertising" under the Indian laws. Although the judiciary has been proactive in this regard and has outlined the characteristics of Comparative Advertisement in the landmark case of Reckitt & Colman v. Kiwi TTK {63 (1996) DLT 29}. The Delhi High Court laid down the following guidelines in this case, which has gained precedential value-

a) A tradesman can make an untrue declaration that his goods are the best in the world.
b) He can also make an untrue statement to the extent that his goods are better than his competitor's.
c) For the purpose of saying that his goods are best in the world or better than his competitor's he has the leverage of comparing the advantages of his goods over the goods of others.
d) The above averments of a tradesman are acceptable only if they do not proclaim that his competitors' goods are bad, in which case it would amount to defamation of the competitor and his goods.
e) If there is no defamation to the goods or to the manufacturer of such goods then no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

The above-mentioned guidelines were adapted in various judicial pronouncements pursuant to the judgment in Reckitt & Colman v. Kiwi TTK, settling the controversies hovering above the treatment of comparative advertisement in relation with trademark infringement. However, the decision in the case of Dabur India Limited v. Emami Limited {112 (2004) DLT 73, 2004}, brought to surface a new dimension. The judge ruled that even in absence of direct reference to the product of a competitor, a mere reference made to the entire class in a generic sense has the potential to instil a case of disparagement.

The Delhi High Court, in its recent judgment in Marico Limited v. Adani Wilmar Ltd { Delhi High Court, Case No- CS(OS) 246/2013 and CS(OS) 319/2013}, denied the interim injunction petition of the plaintiff on the grounds that for an advertisement to be categorized as disparaging, the defendant should have derogated, discredited or disgraced the product of the plaintiff. The Hon'ble High Court relied upon the judgment given in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd {(2010) 44 PTC 254 Delhi (DB)}., and highlighted the test to ascertain whether there has been any disparagement. The key pointers to gauge disparagement are-

a) The intent of the advertisement
b) The overall effect of the advertisement
c) The story line of the commercial and the message sought to be conveyed via the advertisement.

In light of the above judgments, it is evident that the Courts have put to rest the issues hovering above the concept of comparative advertisement i.e. comparative advertising is permissible, but comparative advertising leading to product disparagement is not permissible. In order to win a battle for trademark infringement against the advertiser, it is mandatory to prove that the advertiser has puffed up his goods to the extent of derogating the competitor's products. It is essential to keep in mind the interest of the competitor and the harm that is likely to be caused to its reputation and goodwill through the advertiser's commercial.

The courts in India while interpreting the issue of comparative advertisement vis-à-vis trademark infringement have been very conservative when using the principle of 'fair use' is concerned. The Fair use doctrine in India, unlike US, is used only with respect to Copyright issues. The above-mentioned precedents are biased towards the interests of the competitor and the interest of the advertiser is not of primary importance. If the doctrine of fair use would surface, the interest of honest advertisers would be safeguarded. Therefore, the courts should try and keep the door open to interpret the issues relating to trademark infringement, due to advertiser's commercial, in light of fair use doctrine. An honest advertiser, who advertises his goods without the intention to harm its competitor and mislead public, should be protected. Having said that, the tricky task here would be to identify a honest advertiser.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

The basic legal framework governing comparative advertisement has been laid down by the Monopolies and Restrictive Trade Practices Act, 1984 and the Trade Marks Act, 1999. This article aims at analyzing the concept of comparative advertisement vis-à-vis trademark infringement.

The Trademark Act, 1999 adequately addresses the issue of trademark infringement in the garb of comparative advertisement, thereby permitting comparative advertising by means of using another's trademark. The trademark law, while catering for usage of another's trademark in advertisement, draws a line to the extent of such permitted usage.

The advertiser doing so cannot disparage the goods or services of another. Any such act disparaging the goods or services of another shall not only be an act constituting infringement of trademark, but also shall constitute product disparagement which falls within the ambit of unfair trade practices. It is pertinent to note that the protection provided in the Trademarks Act, 1999, is for a registered trademark. The Trademarks Act also stretches enough to protect well known unregistered marks. This gives the proprietor a statutory alternative to the common law action of passing off.

There is no statutory definition available for the term "Comparative Advertising" under the Indian laws. Although the judiciary has been proactive in this regard and has outlined the characteristics of Comparative Advertisement in the landmark case of Reckitt & Colman v. Kiwi TTK {63 (1996) DLT 29}. The Delhi High Court laid down the following guidelines in this case, which has gained precedential value-

A tradesman can make an untrue declaration that his goods are the best in the world.
He can also make an untrue statement to the extent that his goods are better than his competitor's.
For the purpose of saying that his goods are best in the world or better than his competitor's he has the leverage of comparing the advantages of his goods over the goods of others.

The above averments of a tradesman are acceptable only if they do not proclaim that his competitors' goods are bad, in which case it would amount to defamation of the competitor and his goods.
If there is no defamation to the goods or to the manufacturer of such goods then no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

The above-mentioned guidelines were adapted in various judicial pronouncements pursuant to the judgment in Reckitt & Colman v. Kiwi TTK, settling the controversies hovering above the treatment of comparative advertisement in relation with trademark infringement. However, the decision in the case of Dabur India Limited v. Emami Limited {112 (2004) DLT 73, 2004}, brought to surface a new dimension. The judge ruled that even in absence of direct reference to the product of a competitor, a mere reference made to the entire class in a generic sense has the potential to instil a case of disparagement.

The Delhi High Court, in its recent judgment in Marico Limited v. Adani Wilmar Ltd { Delhi High Court, Case No- CS(OS) 246/2013 and CS(OS) 319/2013}, denied the interim injunction petition of the plaintiff on the grounds that for an advertisement to be categorized as disparaging, the defendant should have derogated, discredited or disgraced the product of the plaintiff. The Hon'ble High Court relied upon the judgment given in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd {(2010) 44 PTC 254 Delhi (DB)}, and highlighted the test to ascertain whether there has been any disparagement. The key pointers to gauge disparagement are-

The intent of the advertisement
The overall effect of the advertisement
The story line of the commercial and the message sought to be conveyed via the advertisement.
In light of the above judgments, it is evident that the Courts have put to rest the issues hovering above the concept of comparative advertisement i.e. comparative advertising is permissible, but comparative advertising leading to product disparagement is not permissible. In order to win a battle for trademark infringement against the advertiser, it is mandatory to prove that the advertiser has puffed up his goods to the extent of derogating the competitor's products. It is essential to keep in mind the interest of the competitor and the harm that is likely to be caused to its reputation and goodwill through the advertiser's commercial.
The courts in India while interpreting the issue of comparative advertisement vis-à-vis trademark infringement have been very conservative when using the principle of 'fair use' is concerned. The Fair use doctrine in India, unlike US, is used only with respect to Copyright issues. The above-mentioned precedents are biased towards the interests of the competitor and the interest of the advertiser is not of primary importance. If the doctrine of fair use would surface, the interest of honest advertisers would be safeguarded. Therefore, the courts should try and keep the door open to interpret the issues relating to trademark infringement, due to advertiser's commercial, in light of fair use doctrine. An honest advertiser, who advertises his goods without the intention to harm its competitor and mislead public, should be protected. Having said that, the tricky task here would be to identify a honest advertiser.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

The Bench of the Supreme Court of India, in its landmark judgment of 112 pages rejected the plea for patent protection to anti-cancer drug Glivec/Gleevec filed by Novartis in 1998.

History

The active pharmaceutical ingredient of Glivec/Gleevec is a specific chemical form of imatinib, namely, the beta polymorph of imatinib mesylate, which exhibits greater stability and bioavailability than the alpha polymorph. A patent for the free base of imatinib was first granted in 1996 to Novartis. Novartis thereafter filed and obtained separate patents for the specific formulation used as the active ingredient of Glivec/Gleevec in several countries.

In 1998, Novartis filed a patent application in India for the Beta crystalline variant of the molecule, which was derived from the amorphous substance that they had earlier patented. During 1995 to 2005, as permitted by TRIPS, patent applications for pharmaceutical substances were received by the Indian Patent Office but were not examined and kept on hold. Such applications are popularly termed as 'mailbox applications.' After 2005 amendment of the Indian Patents Act, the examination of such patent applications started. In January 2006 the patent application of Novartis was rejected by the patent office on the ground that it did not satisfy the efficacy criterion of section 3(d). Novartis persisted in its efforts to get a patent and appealed to the Intellctual Property Appellate Board (IPAB) wherein the application was again rejected. When the IPAB rejected Novartis' application, the company challenged the decision in the Chennai High Court and also challenged section 3(d) of the Indian Patents Act. The Chennai High Court rejected both the appeals, which led to Novartis bringing its appeal to the Supreme Court of India.

Supreme Court decision

In the Supreme Court, Novartis challenged the interpretation of Section 3(d) of the Indian Patents Act. Novartis, in its appeal to the Supreme Court, argued that section 3(d) is not being properly interpreted. The section says that minor variations in an existing molecule cannot be patented unless there is a 'significant' enhancement in efficacy of the medicine. Novartis claimed that since the Beta variant is better absorbed – i.e, it has better 'bioavailability' (by about 30 per cent) it constitutes a significant therapeutic enhancement.

The Supreme Court in its judgment opined: "The subject product, that is, beta crystalline form of Imatinib Mesylate, is thus clearly a new form of a known substance, i.e., Imatinib Mesylate, of which the efficacy was well known. It, therefore, fully attracts section 3(d) and must be shown to satisfy the substantive provision and the explanation appended to it". Further Supreme Court also opined: "In whatever way therapeutic efficacy may be interpreted, this much is absolutely clear: that the physico-chemical properties of beta crystalline form of Imatinib Mesylate … may be otherwise beneficial but these properties cannot even be taken into account for the purpose of the test of section 3(d) of the Act, since these properties have nothing to do with therapeutic efficacy". In regard to the increased bio-availability, Supreme Court observed that: "No material has been offered to indicate that the beta crystalline form of Imatinib Mesylate will produce an enhanced or superior efficacy (therapeutic) on molecular basis than what could be achieved with Imatinib free base….".

Supreme Court interpreted the word 'efficacy' to mean therapeutic efficacy of the drug and hence rejected the appeal made by Novartis and denied the patent because Novartis could not demonstrate that the new form of the said drug enhanced the therapeutic efficacy. Further, the court also rejected Novartis claims of better bioavailability and better physical characteristics such as stability of the compound saying that these do not necessarily improve the therapeutic effect.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July, 2013.

The paradigm of interface between the Intellectual Property Rights (IPRs) and Competition law is that the two legal regimes are interconnected by the economics of fostering innovation and a convoluted web of legal policies that seek to stabilize the scope and effect of each policy. There exists a common area wherein Competition policy and Intellectual Property Law aim at nurturing innovation, effectiveness, consumer welfare and economic growth.

The interface between the two, Competition policy and Intellectual Property Law has been examined from two main aspects: (i) the effect that the Intellectual Property Rights have in shaping the disciplines of competition law; and (ii) the application of competition law on the post-grant use of IPRs

Intellectual Property Rights act as an institutional regulatory framework restricting, usually as an exemption, pure exclusion of restraints by competition law. The Competition Act, 2002 (India) under section 3- outlines that its provisions will not restrict "the right of any person to restrain any infringement of or to impose reasonable conditions, as may be necessary for protecting any of his rights which have been or may be conferred upon him under various IPR statutes. Nonetheless, the Competition Act does draw the line insofar as it does not permit unreasonable conditions to be passed off under the guise of protecting IPRs. Thus, in principle, IPR licensing arrangements which interfere with the Competition law policies such as competitive pricing, quantities, qualities of products or abuse of the dominant position whatever be the source of such practices would fall foul of latter in India. For instance, the field-of- use limitation on the Licencee, if it is stipulated that it should be used as medicine only for humans and not animals, even though it could be used for both. Likewise, the Monopolies and Restrictive Trade Practices (MRTP) Commission in - Vallal Peruman and Another v. Godfrey Phillips (India) Limited (MRTP Commission, 1994) and Manju Bhardwaj v. Zee Telefilms Ltd (MRTP Commission, 1996) observed that where a trademark is misused by manipulation, distortion, contrivances and embellishments so as to mislead/confuse the consumers, he would be exposing himself to an action of indulging in unfair trade practices. In other words, this implies that the Competition Act prohibits trade practices visible to the detriment of public interest and also restricts the unreasonable conditions imposed by a right holder during the exercise of a right.

The reconciliation of IPRs and competition policy entails the necessity to identify IP laws as a form of competitive policy, resulting in a bal­ance between individual interests of the right-holders and the interest of the society at large, and encouraging further innovation. Competition law and IPR become less divergent given the fact that fundamental aim of innovation/ inventions is more competition. The construction of interaction between competition law and intellectual property rights is driven by a number of competing considerations apart from the IPRs and competition principles. The challenge for the state is to devise rules both within the ambit of IP law as well as outside it, i.e. statutory IP laws as well as substantive competition law in a manner that promotes dynamic competitive markets The middle path can be achieved only by reconciling the immediate goals of the two systems only with reference to their effect on the market i.e. IP law must deal with the grant and functioning of property rights, while competition law would need to deal with the manner of exercise of these rights.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 2nd November, 2012.

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings as well as software. However, there are certain exceptions to the use of the copyrighted works and the same are enshrined under section 52 of the Copyright Act, 1957 (the "Act"). Recently, the exception of fair dealing has been assailed by Oxford and Cambridge University Press, one of the oldest and largest publishing houses in the world, in an infringement suit in the Delhi High Court. The aforesaid publishing giants have filed an infringement action against one Rameshwari Photocopy Service (Defendant No. 1), a photocopying shop attached to Delhi University (Defendant No.2) alleging that they are reproducing complete chapters from plaintiff's publications and selling them as a part of course packs and have asked for permanent injunction of the practice and recompense them monetarily. On the other hand, the Defendants have tried to invoke the defence of fair dealing by submitting that the copying limited pages from any work for use in research and for use in the classroom by a student or a teacher is recognised under the Section 52(1) (a) and (i) of the Act. It is pertinent to note herein that while the matter is sub-judice, the Defendants have been restrained from photocopying the Plaintiffs' publications till the final disposal of suit.

According to Section 52(1) of the Act, which talks of certain acts not to be infringement of copyright, a fair dealing with literary work for the purposes of private use, including research or criticism or review, whether of that work or of any other work shall not constitute an infringement of copyright. Further, according to Section 52(1)(i) of the Act, the reproduction of any work –

By a teacher or pupil in the course of instruction; or
As part of the questions to be answered in an examination; or
In answers to such questions;"
Shall not amount to infringement of copyright. The actions of Rameshwari Photocopy Service when analysed in the light of Section 52 of the Copyright Act, 1957, should fall within the ambit of fair dealing for this whole practice of photocopying books and using them for private study purposes is not illegal and cannot be counted as a copyright infringement.

Further, in CCH Canadian Ltd. v. Law Society of Upper Canada, the Supreme Court of Canada noted that:

"…The fair dealing exception, like other exceptions in the Copyright Act, is a user's right. In order to maintain the proper balance between the rights of a copyright owner and users' interests, it must not be interpreted restrictively."

It is a fact that in India there are many students who are economically backward, and, therefore, cannot afford to buy such expensive books.
It is pertinent to note that in Cambridge University Press & Others v. Mark B.Pecker, while deciding upon an infringement matter, the United States District Court for the Northern District of Georgia, Atlanta Division, pointed out that "if a professor used an excerpt representing 10% of the copyrighted work, and this was repeated by others many times, would it cause substantial damage to the potential market for the copyrighted work? The answer is no, because the 10% excerpt would not substitute for the original, no matter how many copies were made."

Therefore, the Delhi High Court must consider the Indian education scenario along with the amount of excerpt used as a photocopy material to determine a new threshold and decide the case accordingly. As India is a big country, there is a need for bigger threshold value, because of the higher theoretical studies in the universities. The idea is that it's not for the gain of owner that the photocopy owner and the University had copied the data but it was done to provide better education to those poor students who cannot afford to buy expensive books.

The battle against copyright infringement must also be fought on the simple premise of rights, a right to access knowledge, a right for people who basically cannot afford to pay, a right to oppose another form of gate-keeping that reduces access to those who cannot afford. It isn't even a case of a 'mere defense, but a right and an entitlement to access educational material and protect public interest.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 25th June, 2013.

Intellectual property (IP) is an intangible asset and probably the most important form of property today. The definition of IP has widened with the growth of international trade and globalization of economy, giving the whole business a new paradigm. IP having developed into a powerful commercial asset with the ever revolving digital technology, its theft has also become rampant.

John Doe Orders

India has started using this unique concept of John Doe orders (also famously known as Ashok Kumar orders) to punish class of unknown infringers. The name "John Doe" is used to identify unknown infringers, who have allegedly committed some wrong, but whose identity is unknown to the plaintiff. To avoid delay and to render justice, the court names the defendant as "John Doe" until such time the defendant is identified. The orders passed by court in such cases are thus popularly known as "John Doe orders".

John Doe orders are given when no other alternative is left to ensure justice and means to provide immediate and effective course of action to the plaintiff. The John Doe order also affords the trade-mark or copyright owner the possibility of curtailing the infringer's future activity by means of an injunction.

The Indian judiciary has taken positive steps towards development of this trend and recognizing the need for such orders to provide relief to interested parties. The Indian Courts have since long granted interim order under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 to protect the rights of the plaintiff and prevent possible injury. The Delhi High Court ("Delhi HC") passed its very first John Doe order in the year 2002, in Tej Television Limited vs. Rajan Mandal. The matter dealt with unauthorized transmission of channel ("Ten Sports") by unlicensed cable operators without entering into agreements with marketing partners of the plaintiff. Around 1377 cable operators had taken licenses but several prominent cable operators had not signed up and broadcasted the same without any approvals. The plaintiff was the owner of the registered broadcasting right of the channel for the Soccer World Cup, 2002. The unauthorized broadcasting caused losses to the plaintiff and also strained their relationship with the other licensees.

Quia Timet Action

Quia Timet injunctions in the recent past have been given prior to release of several new movies to prevent sale of pirated copies and illegal copying/distribution/ broadcast of new films/songs by cable operators and other unauthorized persons. The Delhi HC has been the most pro-active in creating awareness and passing such unique orders in case of movies like Singham, Bodyguard, Speedy Singhs and Don 2, granting ad-interim ex-parte injunction against unknown persons and protecting the proprietors from infringement of their intellectual property.

Media Industry

In Singham case, interim applications were filed for injunction to prevent piracy and loss of revenue to the plaintiff without actual infringement. The Delhi High Court passed a John Doe order restraining all defendants and other unknown persons constituting part of the same class from distributing, displaying, duplicating, uploading, downloading or exhibiting the movie in any manner. Eventually, several Indian ISPs were contacted to block access to several file sharing websites.

John Doe orders are becoming quite common in the film industry and seem to be an effective way to curb piracy. The trend is not restricted to only movies but as was initiated in Tej Television, also extends to cases involving broadcasting/using unauthorized signals.

Software-ISPs domain

India has not been far behind in tracking Internet Service Providers ("ISPs") to prevent unwanted and unlawful materials from being shown or written on internet by anonymous bloggers or illegal downloading following the path paved by other jurisdictions. Recently, Reliance obtained John Doe order from the Delhi HC to prevent pirated copies of movie inter alia Don 2 and Bodyguard from being sold/downloaded/distributed. By the passing of John Doe orders websites, cable operators and Internet Service Providers (ISPs) and others were prevented from pirating the movie, in advance.

The usage of John Doe orders in the Indian scenario has brought in awareness and protection to holders of IP rights but the question remains how such orders will be implemented and enforced. The issue before us is if the unidentified defendants are unaware of such orders or unwilling to abide by the Court order and continue with the said infringement, is any remedy left with the plaintiff or the entire process of obtaining such orders go waste leaving the plaintiff without any benefit and losing its entire impact? Appointment of Commissioners for search and seizure, new guidelines for curbing copyright infringement are all modes of effectuating John Doe orders. But still the notion seems to be at nascent stage with handful of orders being passed and still very few people knowing about its usage and application. An effective mechanism needs to be set into motion to address implementation of such extreme orders, by way of communicating the same to the proposed infringers through a proper mode and their compliance to receive the desired reliefs. John Doe has miles to go in achieving its very purpose.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

As per Section 16 of the Indian Patents Act, if a Patent Application describes more than one inventive concept, then at the time of examination, examiner may require the Inventor/Applicant of the Patent Application (also referred as Parent Application) to divide the inventive concepts present in the Parent Application and to file one or more Divisional Patent Application(s). Also, Inventor/Applicant on his own can file Divisional Application any time before the grant of the Parent Application. Filing Divisional Application helps the Inventor/Applicant to file a new complete application, without losing the priority rights. The said provision of law has been succinctly defined in Section 16 of the Indian Patents Act, 1970 under the heading "power of Controller to make orders respecting division of application"

Recently few cases have been adjudicated upon by Intellectual Property Appellate Board (IPAB) with regard to qualification of Patent application as a divisional Patent application:

In a recent judgment issued by IPAB in the above matter, the Divisional application filed by Bayer Animal Health GmbH was rejected due to the fact that the Divisional Application filed by the Applicant does not satisfy the test under Section 16 and hence cannot be entertained.

The Applicant Bayer Animal Health GmbH had filed an application for a pharmaceutical product with a chemical base in the year 1999, which was basically a Divisional Application derived from a Patent Application filed in the year 1997. The Parent Application was examined and the First Examination Report issued stated the invention was not patentable under section 5(1)(b) of the then existing Patents Act, 1970. Further, for not responding to the objections raised and failure to comply with the requirements made by examiner, the application was deemed to have been abandoned under Section 21(1) of the Act.

After the amendment of the Patents Act, 1970, product Patent regime was introduced in India. Pharmaceutical and chemical products became patentable subject matter. Bayer Animal Health GmbH filed a fresh application for the same invention as a Divisional Application of the earlier filed Parent Application. During examination, the present application was objected on the grounds that the application does not comply with the requirements of Section 16 of the Patents Act, 1970 and was held invalid under Section 16. Bayer Animal Health GmbH replied to the objections stating that the Examiner had not given a correct interpretation to the provisions of Section 16. However, the Applicant did not inform the Patent Office that the earlier filed Parent Application was deemed to have been abandoned under section 21(1) of the Act. The Application was again examined and objections were raised that the present application cannot be considered as a Divisional Application, as section 16 requires the Parent Application to contain more than one invention for filing a Divisional Application.

In an earlier judgment issued by IPAB, the Divisional Application filed by LG Electronics was rejected on the ground that the said Divisional Application does not satisfy the requirements of Section 16.

In the said matter LG Electronics filed a National Phase application in the year 2004 and thereafter filed Divisional Application in the year 2005. In the Examination Report issued in the Divisional Application, the Examiner raised the substantive objection that the Parent Application is deemed to be abandoned due to the fact that Applicant did not respond to the Examination Report within the prescribed time period and further the Parent Application does not have plurality of the invention for which Divisional Patent Application can be filed.

Responding to the objection, LG Electronics put forth the argument that according to Section 16 of the Patents Act, 1970 the Applicant can file a Divisional Application any time before the grant of Patent if he so desires. Accordingly the Appellant is entitled to file a Divisional Application voluntarily even if parent application does not contain more than one invention.

In response to the arguments by LG Electronics, the IPAB observed that for filing the Divisional Application, the Parent Application should contain plurality of invention and should not be linked by single inventive concept; and, accordingly, the divisional application was rejected

Based on the above decisions of the IPAB, it is recommended that the Inventor/Applicant filing Divisional Application suo motto should only file the Divisional Application if the claims of the Parent Application relate to more than one invention. Division of Parent Application only to circumvent the substantive objections during the examination proceedings of the Parent Application could be detrimental.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29thJanuary, 2013.

Residents not to apply for Patents outside India without prior permission.

No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a Patent for an invention unless :

a. an application for a Patent for the same invention has been made in India, not less than six weeks before the application outside India; and
b. either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Section 39 or provision of foreign filing license was initiated for the first time by the Patents (Amendment) Act, 2002 which later on was amended by the PATENTS (AMENDMENT) ACT, 2005 which improved the scope of the section 39 which includes "any invention" and not just confined to the inventions related to atomic energy and defense.

Section 39 of the Indian Patents Act as amended necessitates an Applicant to obtain a Foreign Filing License (FFL) for any invention before applying for a Patent for a technology in a foreign country, without applying for a corresponding Patent in India. The requirement to apply for a FFL depends on the origin and inception of the invention and is independent on the Individuals citizenship. If the invention is created or conceived in India then the Applicant must have to obtain foreign filing license before filing it abroad.

The consequences of contravention of Section 39 of Indian Patents act is being given in Section 40 of the Indian Patents Act which says about the liability for contravention of section 35 or section 39 where if any person makes or causes to be made an application for grant of a Patent outside India in contravention of section 39 then the application for Patent under this act shall be deemed to have been abandoned and the Patent granted, If any, shall be liable to be revoked under section 64. Moreover as mentioned in section 118 of the Indian Patents Act which says about the contravention of secrecy provisions relating to certain inventions where if any person fails to comply with any direction given under section 35 or causes to be made an application for grant of a Patent in contravention of section 39 shall be punishable with imprisonment for a term which may extended to two years, or with fine, or with both.

Therefore, knowing the provision is of highest importance, especially in today's scenarios where provisions such as technology transfer is on Pace.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 19th December, 2012.

The Indian Patent Office on 9th March 2012, issued the first-ever compulsory licence (CL) to an Indian generic drug manufacturer, Natco Pharma, to manufacture an affordable generic version of Sorafenib tosylate (Nexavar), the anti-cancer drug for which Bayer had obtained a Patent in India in 2008.

The said issue commenced when Bayer rejected Natco's request for a commercial licence to manufacture Nexavar. Natco on July 2011 applied for a compulsory licence to make a copy of the drug, claiming Bayer had failed to meet the needs of the local market, wherein the clauses comprised of (1) Bayer supplied the drug to only 2% of the patient population (2) Bayers pricing of the drug (2.8 lakhs for a months' supply of the drug) (3) Bayer did not sufficiently "work" the Patent in India. Controller General of Patents after taking all the clauses into consideration and after completing hearing with both companies in February 2012 came up with his 62-page order, wherein said compulsory licence under section 84 of the Patents Act was granted to Natco which enabled Natco to sell the drug at a price not exceeding Rs 8,880 for a pack of 120 tablets (one month's therapy) as against Rs 2,84,428 being the cost of Nexavar sold by Bayer and also made it obligatory for Natco to supply the drug free of cost to at least 600 needy patients every year and Natco was directed to pay 6% royalty on sales to Bayer for the drug on a quarterly basis.

Thereafter on May 2012, Bayer appealed against the Controller's order before the Intellectual Property Appellate Board (IPAB), wherein Bayer among other reasons also pointed to the fact that another pharmaceutical company Cipla had started selling its generic version at a lower price, rendering the compulsory licence unnecessary as the drug was indeed available at a reasonable price. IPAB on September 2012 came up with its decision in which it dismissed Bayer petition against Natco over manufacture of Nexavar and observed that "if stay is granted, it will jeopardise the interest of public who are in the need of the drug. The appellant has not made out any case for granting a stay." Also it was stated by IPAB that "The appellant cannot ride piggy-back on, or take shelter under, the sale by Cipla. It is the duty of patentee that its own supply be made available at reasonable price to the requirement of the public".

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 20th November, 2012.

The Indian Patent Office on 9th March 2012, issued the first-ever compulsory licence (CL) to an Indian generic drug manufacturer, Natco Pharma, to manufacture an affordable generic version of Sorafenib tosylate (Nexavar), the anti-cancer drug for which Bayer had obtained a Patent in India in 2008.

Section 83 of the Indian Patents Act

This act says about General principles applicable to working of patented inventions according to which:-

"Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely:-

(a) that Patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;

(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article;

(c) that the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations;

(d) that Patents granted do not impede protection of public health and nutrition and should act as an instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India;

(e) that Patents granted do not in any way prohibit Central Government in taking measures to protect public health;

(f) that the Patent right is not abused by the patentee or person deriving title or interest on Patent from the patentee, and the patentee or a person deriving title or interest on Patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and

(g) that Patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public." Therefore, we can conclude the above mentioned section simply by stating that sole motto of Patent is to benefit people by making it available to public in affordable prices, encouraging inventions and not only to enjoy a monopoly for the importation of the invention.

Section 146 of the Indian Patents Act

Submission of working statements complies with the Section 146 of the Indian Patent act which says about the Power of Controller to call for information from patentees.
"(1) The Controller may, at any time during the continuance of the Patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.

(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed."

As mentioned above in subsection (2) of Section 146, every patentee and every licensee has to provide the information on the extent to which the patented invention has been worked on a commercial scale in India. The working statement as said must be furnished towards the controller in Prescribed intervals as under rule 131 of the Patents rule, 2003, which says:-

"Form and manner in which statements required under section 146(2) are to be furnished.

(1) The statements which shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licensee or his authorized agent.

(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

(3) The Controller may publish the information received by him under sub-section (2) of section 146."

Therefore as mentioned in rule 131 these statements can be supplied every financial calendar year, within three months of the end of each year.
Consequences:-

Section 122 of Indian Patent Act as mentioned in Penalty in chapter XX

Refusal or failure to supply information.

(1) If any person refuses or fails to furnish -

(a) to the Central Government any information which he is required to furnish under subsection (5) of section 100.

(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with a fine which may extend to ten lakh rupees.

(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with a fine, or with both."

As mentioned in subsection 1(B) and section (2) failure to submit the working statement may lead to fine which may extend up to ten lakh rupees, and submission of false working statement may lead to imprisonment of up to six months or with a fine, or with both.

Further the non-working of Patents may open the way towards compulsory licensing provisions as mentioned under the act in section 84(1) (C) which says that at any time after the expiration of three years from the date of the grant of a Patent, any person interested may make an application to the Controller for the grant of compulsory license on Patent on grounds that the patented Invention is not worked in the territory of India.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 21st November, 2012.

The change in the world Trade patterns has largely affected the advertising ways and means. The accessibility and dissemination of information on the internet have changed the protection and enforcement mechanisms for intellectual property rights.

The effects of globalised Trade, inter-continent travel, international circulation of literature, availability of news and periodicals on the world-wide web has made the accessibility of information very easy. Internet has not only remained a source of information but has become a big platform for advertisement.

Meta-tagging and cyber squatting which have now become common practices made it impossible for rights holders to seek protection under the conventional doctrine of likelihood of confusion.

The need was felt by WIPO and provisions for the protection of well-known marks in the member countries were introduced. In order to comply with Article 16 of TRIPS Agreement section 11(10) and 29(4) were inserted in the Indian Trade Marks Act, 1999 so as to accord protection to well-known marks. However, when it came to the practice and implementation of the law, it was found to be crippled with many obstacles such lack of a proper definition for 'well-known' marks, the requirement of proving use of a mark in the country of its enforcement in order to prove reputation or goodwill.

It was then that the concept of trans-border or spill over reputation was acknowledged by the courts world wide. Here, it is imperative to understand that goodwill and reputation though used interchangeably, theoretically they are not one and the same concepts. The following statement might help:-

Where there is goodwill, there is reputation but the vice-versa is not true.

In England, in the Budweiser's case , the English Courts declined to protect trans-border reputation by striking a distinction between reputation and goodwill and holding that for a passing off action it was necessary to have a protected goodwill, which meant doing of business in the open market in England. In the said case, Budweiser being an American company was unable to restrain a Czeckoslovakian company from using the mark Budweiser because its products were not sold in the open market in England. It was not enough that the products were sold in the American Military bases as that amounted to having a reputation but not a protectable goodwill. The result was that a well-known Trade Mark could not be protected in England. The Indian Courts disagreed with the Budweiser decision of English Court.

In India, it is enough to prove reputation of the goods/service i.e. the consuming public's knowledge of the goods/service is sufficient to initiate an action for passing off based on trans-border or spill over reputation.

In N.R. Dongre & Others v. Whirlpool Corporation & Another, the Indian Supreme Court has held that "the knowledge and awareness of a Trade Mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinemas etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. Dissemination of knowledge of a Trade Mark in respect of a product through advertisement in media amounts to use of the Trade Mark whether or not the advertisement is coupled with the actual existence of the product in the market.

In para 44 of the above judgment the Division Bench also referred to a decision of the High Court of Australia in The Seven Up Company v. O.T. Ltd. wherein it was observed as follows:- The Court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It Therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.

The concept of confusion in the mind of consumer is critical in actions for Trade Mark infringement and passing off, as well as in determining the registrability of the Trade Mark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditional principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well known marks by doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark is likely to be detrimental to the distinctive character or reputation of an earlier well known mark.

Protection of trans-border reputation is not limited to like, cognate or allied products, it is very well accorded to dissimilar and non-competing goods/services as well.

In a leading case the manufacturers of Mercedes Benz sought an injunction against the Defendants who were using the famous "three pointed star in the circle" and the word "Benz". The Court granted injunction against the Defendants who were using these marks for selling inner-wear. In the Kamal trading Co. v. Gillette UK Limited, injunction was sought against the Defendants who were using the mark 7'O Clock on their toothbrushes. This was further reaffirmed by the Bombay High Court, which held that the Plaintiff had acquired an extensive reputation all over the world including India by using the mark 7'O Clock on razors, shaving creams and the use of an identical mark by the Defendant would lead to the customer being deceived.

The entire idea is to prevent a man from selling his own goods under the pretence that they are the goods of another man.

The Hon'ble Delhi High Court in Blue Cross and Blue Shield Association v. Blue Cross Health Clinic, granted an exparte injunction relief on the ground that there was an international reputation of the plaintiff's mark although there was no registration or use of the said Trade Mark in India. The Hon'ble Calcutta High Court in Kabushiki Kaisha Toshiba v. Toshiba Appliances Co., attached more importance to 'use of mark' in relation to goods than trans-border reputation. But the Division Bench of the same court in M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle, observed that the use of a Trade Mark does not necessarily imply actual sale of the goods bearing such mark.

The judgment of Supreme Court of India in Milmet Oftho Industries & Ors. v Allergen Inc, has added further clarity to the Indian legal position on this point. In this case the appellants were the prior user of the Trade Mark OCUFLOX internationally. The defendant had started manufacturing a similar drug in India under the same name. The Supreme Court laid down the 'first past the post' principle and held that even though the defendants were the prior users of the mark in India, the appellants claimed superior rights on the mark as they had accumulated a huge reputation through sale of the medicines internationally and thus they were first past the post. The Supreme Court's has applied the 'first past the post' principle in Blender's Pride case as well.

It is today well settled that international and world wide reputation are indicators of the goodwill attached to a Trade Mark. Courts have repeatedly accepted promotional activity in India as one of the factors which evidences the reputation of the plaintiffs' products being sold under such Trade Mark.

In Austin Nichols and Co. and Anr. v. Arvind Behl and Anr., which is popularly known as the Blender's Pride case, the Delhi High Court had held that 'Blenders Pride' whisky which was manufactured by the Plaintiffs enjoyed a worldwide reputation, being available for sale in a large number of countries since 1973 onwards. The product was not unknown in India. The predecessor in interest of the plaintiffs had an intention of directly exploiting the Indian market. They had applied for permission from the Government of India to manufacture 'Blenders Pride' whisky which was granted and they had been manufacturing 'Blenders Pride' whisky in India since 1995. They however manufactured 'Blenders Pride' whisky for a couple of months in 1993-1994 and stopped manufacturing till sometime in 2005 that is for a period of almost 11 months. The Court held: "the Plaintiffs having come out with 'Blenders Pride' whisky first in the international market were first past the post; even though the Defendants were the first to do so in India. The fact that the product of the plaintiffs was not manufactured or sold in India from 1973 when it first entered the market) till 1995 when it became freely available in India, is of no consequence."

Indian courts have time and again made their stand clear on the protection of trans-border reputation. There is a plethora of cases where the courts have held that the reputation of a trader, trading or carrying on the business in another country, can travel to a country where he had carried no business. The traders' trans-border reputation can be on the basis of extensive advertisements and publicity. Such a trader could obtain injunction in a Court where he was not trading to protect his reputation. The Indian Courts also recognize the existence of trans border reputation , a product and its Trade name transcends the physical boundaries of a Geographical region and acquires trans border overseas or extra territorial reputation not only through import of goods but also by its advertisement. The knowledge and awareness of the goods of foreign trader and its Trade Mark can be available at a place where goods are not being marketed and consequentially not being used.

Trans-border or the international reputation acquired by a Trade Mark has been held to justify an injunction in India, even though the plaintiff had not entered the market so far.

In Solian Ink v. Doctor and Co., the Court held that mere advertisement in the other country i.e. the country where injunction is sought is sufficient if the Trade Mark has established its reputation and goodwill in the country of its origin and the countries where it is registered. It is not necessary that the association of the plaintiff's mark with its goods should be known in the country other than its origin or to every person in the area where it is known at best. In this behalf, it was again observed that in the modern world, advertisements in the newspapers travelled beyond the country where the party is engaged in business through overseas editions or otherwise. Mobility has rendered international awareness of the commodities and reputation travels faster than man.

Icrave, LLC v. Icrave Designs Pvt. Ltd. was a case on similar lines wherein the firm (ZeusIP Advocates) had presented the plaintiff for an action for injunction against the passing off activities of the defendants. ICRAVE is the invented Trade Mark of the plaintiff used for its services relating to designing of hotels and casinos. The defendants started using a a deceptively similar Trade Mark and Trade name Icrave Designs Pvt. Ltd. for similar services.

The hon'ble Single Judge of the Delhi High Court held that the plaintiff had invented and adopted the mark ICRAVE and had acquired sufficient reputation through its quality services. The extensive advertisements campaigns undertaken by the plaintiff was held to have formed formidable trans-border and spill over reputation of the plaintiff's mark in India even in the absesnce of availability of its services in India. The Judge applied the established principles of trans-border reputation, as discussed in the cases above, along with the doctrine of first past the post in the international market and held that the plaintiff was entitled to protection of its rights in and to the said Trade mark. It was further held that the a likelihood of confusion on the part of the consumers coupled with the tripartite test of i) prima facie case, ii) balance of convenience and iii) irreparable loss or injury lied in favour of the plaintiff and thus an ad interim injunction was awarded in favour of the plaintiff.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 2nd November, 2012.

The paradigm of interface between the Intellectual Property Rights (IPRs) and Competition law is that the two legal regimes are interconnected by the economics of fostering innovation and a convoluted web of legal policies that seek to stabilize the scope and effect of each policy. There exists a common area wherein Competition policy and Intellectual Property Law aim at nurturing innovation, effectiveness, consumer welfare and economic growth.

The interface between the two, Competition policy and Intellectual Property Law has been examined from two main aspects: (i) the effect that the Intellectual Property Rights have in shaping the disciplines of competition law; and (ii) the application of competition law on the post-grant use of IPRs

Intellectual Property Rights act as an institutional regulatory framework restricting, usually as an exemption, pure exclusion of restraints by competition law. The Competition Act, 2002 (India) under section 3- outlines that its provisions will not restrict "the right of any person to restrain any infringement of or to impose reasonable conditions, as may be necessary for protecting any of his rights which have been or may be conferred upon him under various IPR statutes. Nonetheless, the Competition Act does draw the line insofar as it does not permit unreasonable conditions to be passed off under the guise of protecting IPRs. Thus, in principle, IPR licensing arrangements which interfere with the Competition law policies such as competitive pricing, quantities, qualities of products or abuse of the dominant position whatever be the source of such practices would fall foul of latter in India. For instance, the field-of- use limitation on the Licencee, if it is stipulated that it should be used as medicine only for humans and not animals, even though it could be used for both. Likewise, the Monopolies and Restrictive Trade Practices (MRTP) Commission in - Vallal Peruman and Another v. Godfrey Phillips (India) Limited (MRTP Commission, 1994) and Manju Bhardwaj v. Zee Telefilms Ltd (MRTP Commission, 1996) observed that where a Trade Mark is misused by manipulation, distortion, contrivances and embellishments so as to mislead/confuse the consumers, he would be exposing himself to an action of indulging in unfair Trade practices. In other words, this implies that the Competition Act prohibits Trade practices visible to the detriment of public interest and also restricts the unreasonable conditions imposed by a right holder during the exercise of a right.

The reconciliation of IPRs and competition policy entails the necessity to identify IP laws as a form of competitive policy, resulting in a balance between individual interests of the right-holders and the interest of the society at large, and encouraging further innovation. Competition law and IPR become less divergent given the fact that fundamental aim of innovation/ inventions is more competition. The construction of interaction between competition law and intellectual property rights is driven by a number of competing considerations apart from the IPRs and competition principles. The challenge for the state is to devise rules both within the ambit of IP law as well as outside it, i.e. statutory IP laws as well as substantive competition law in a manner that promotes dynamic competitive markets The middle path can be achieved only by reconciling the immediate goals of the two systems only with reference to their effect on the market i.e. IP law must deal with the grant and functioning of property rights, while competition law would need to deal with the manner of exercise of these rights.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.